USPTO Patents Application 09602418

United States Patent and Trademark Office

UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Ofllce
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450

Alexandria, Virginia 223 13-1450
www.uspio-gov

APPLICATION NO.

FILING DATE

FIRST NAMED INVENTOR

ATTORNEY DOCKET NO.

CONFIRMATION NO.

09/602,418

06/23/2000

Marek Musial

6963 US

9398

30078 7590 02/21/2007

MATTHEW D. RABDAU
TEKTRONIX, INC.
14150 S.W. KARL BRAUN DRIVE
P.O. BOX 500 (50-LAW)
BEAVERTON, OR 97077-0001

EXAMINER

JUNG, MIN

ART UNIT

PAPER NUMBER

2616

SHORTENED STATUTORY PERIOD OF RESPONSE

MAIL DATE

DELIVERY MODE

3 MONTHS 02/21/2007 PAPER

Please find below and/or attached an Office communication concerning this application or proceeding.

If NO period for reply is specified above, the maximum statutory period will apply and will expire 6 MONTHS
from the mailing date of this communication.

PTOL-90A (Rev. 10/06)

Office Action Summary

Application No.

09/602,418

Applicant(s)

MUSIAL, MAREK

Examiner

Min Jung

Art Unit

2663

The MAILING DATE of this communication appears on the cover sheet with the correspondence address
Period for Reply

A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS,
WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.

- Extensions of time may be available under the provisions of 37 CFR 1 .136(a). In no event, however, may a reply be timely filed
after SIX (6) MONTHS from the mailing date of this communication.

- If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.

- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
earned patent temri adjustment. See 37 CFR 1.704(b).

Status

1 )S Responsive to comnnunication(s) filed on 30 November 2006 .
2a)S This action is FINAL 2b)n This action is non-final.

3) n Since this application is in condition for allowance except for formal matters, prosecution as to the merits is

closed in accordance with the practice under Ex parte Quayle, 1935 CD. 11, 453 O.G. 213.

Disposition of Claims

4) S Claim(s) 2-14 and 16 is/are pending in the application.

4a) Of the above claim(s) is/are withdrawn from consideration.

5) n Claim(s) is/are allowed.

6) ^ Claim(s) 2-14 and 16 is/are rejected.
?)□ Claim(s) is/are objected to.

8) n Claim{s) are subject to restriction and/or election requirement.

Application Papers

9) 0 The specification is objected to by the Examiner.

10) 0 The drawing(s) filed on is/are: a)n accepted or b)n objected to by the Examiner.

Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1 .85(a).
Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).

1 1) 0 The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.

Priority under 35 U.S.C. § 119

12) ^ Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
aM All b)n Some * c)^ None of:

1 Certified copies of the priority documents have been received.

2. n Certified copies of the priority documents have been received in Application No. .

3. n Copies of the certified copies of the priority documents have been received in this National Stage

application from the International Bureau (PCT Rule 17.2(a)).
* See the attached detailed Office action for a list of the certified copies not received.

Attachment(s)

1) □ Notice of References Cited (PTO-892)

2) n Notice of Draftsperson's Patent Drawing Review (PTO-948)

3) O Information Disclosure Statement(s) (PTO/SB/08)

Paper No(s)/Mail Date .

4) n Interview Sunnmary (PTO-413)

Paper No(s)/Mall Date. .

5) n Notice of Informal Patent Application

6) □ Other: .

U.S. Patent and Trademartt OfTice
PTOL-326 (Rev. 08-06)

Office Action Summary

Part of Paper No./Mail Date 20070215

Application/Control Number: 09/602,418
Art Unit: 2663

Page 2

DETAILED ACTION

Claim Rejections - 35 USC § 101

1 . 35 U.S.C. 1 01 reads as follows:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title.

2. Claims 2-14, and 16 are rejected under 35 U.S.C. 101 because the claimed
invention lacks patentable utility. The present invention is directed to data manipulation
for the purpose of protocol analysis. For example, claim 2 recites grouping times, which
comprises a calculating step and a forming step. What is recites here is an abstract idea
since a practical application is lacking. The steps performed are merely data
manipulation and therefore lacks physical application that produces a useful, tangible,
and concrete result.

Response to Arguments

3. Applicant's arguments filed November 30, 2006 have been fully considered but
they are not persuasive.

Applicant argues that the claims are "useful" because it facilitates the validation
and smooth functioning of communication systems, "concrete" because it is
reproducible and predictable, and "tangible' because it corresponds to a useful,
concrete or tangible thing: a protocol implementation of a communication system.

Examiner would like to point out again that the recited steps are directed to data
manipulation. The end result of the recited invention, in claim 2, for example, is a set of

Application/Control Number: 09/602,418 Page 3

Art Unit: 2663

data, i.e., the equivalence classes are formed from the similarity matrix. There is no
application of the end result, and the end result does not even justify the preamble of "a
method of learning a finite automaton..."; where is the "learning"? who or what has
learned?

Applicant's disclosure in the specification may be useful, but the claims do not
recite any post solution activity or physical transformation of the manipulated data.
Claims do not include application of the end result regarding validation and smooth
functioning of communication systems. The claims do not produce concrete result
because the end results are numbers or logic conditions, which are abstract ideas
lacking a practical application. The claims are not tangible, and the steps recited do not
specifically relate the end result to protocol implementation of a communication system.

Therefore, examiner's position is maintained with regard to the rejection under 35
use 101.

Conclusion

4. THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time
policy as set forth in 37 CFR 1 . 1 36(a).

A shortened statutory period for reply to this final action is set to expire THREE
MONTHS from the mailing date of this action. In the event a first reply is filed within
TWO MONTHS of the mailing date of this final action and the advisory action is not
mailed until after the end of the THREE-MONTH shortened statutory period, then the
shortened statutory period will expire on the date the advisory action is mailed, and any

Application/Control Number: 09/602,418

Page 4

Art Unit: 2663

extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
the advisory action. In no event, however, will the statutory period for reply expire later
than SIX MONTHS from the mailing date of this final action.

5. Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Min Jung whose telephone number is 571-272-3127.
The examiner can normally be reached on Monday through Friday 9:00 - 5:00.

If attempts to reach the examiner by telephone are unsuccessful, the examiner's
supervisor, Wellington Chin can be reached on 571-272-3134. The fax phone number
for the organization where this application or proceeding is assigned is 571-273-8300.

Information regarding the status of an application may be obtained from the
Patent Application Information Retrieval (PAIR) system. Status information for
published applications may be obtained from either Private PAIR or Public PAIR.
Status information for unpublished applications is available through Private PAIR only.
For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
you have questions on access to the Private PAIR system, contact the Electronic
Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
USPTO Customer Service Representative or access to the automated information
system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.

MJ

February 15, 2007

Primary Examiner